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Sept. Newsletter

September 2012
Colorado Bar Association
Intellectual Property Section
In this issue...
Upcoming IP Section Events

October Federal Circuit Visit

Date and Time:Oct. 2–4, Various times
Location: Various Locations

During the first week of October, the Court of Appeals for the Federal Circuit will be in Colorado. This is an exciting and unique opportunity to attend oral arguments and a variety of other events around the Court’s first visit to Colorado to hear cases. The Federal Circuit will have oral arguments at the Arraj and Rogers Courthouses, the University of Colorado, and the University of Denver. The judges will also attend public events, including a formal dinner at the Colorado History Museum that is open to members of the IP community, and other educational and social events for local attorneys and judges. For more details on the visit, please visit the blog site.

Winter IP Boot Camp

Date and Time: Thursday, Jan. 17—All Day
Location: CBA Offices, 1900 Grant Street, Denver CO 80203

This day provides foundational basics in the practice of intellectual property law to newly minted attorneys or those wishing to transition to intellectual property. There will be an exciting line-up of expert speakers, including Magistrate Judge Mix on how to interact with the court, and Judge Carparelli on professionalism in the workplace. An in-house panel will discuss how to interact with clients, and speakers will present on the current state of the job market, and the nuts and bolts of practicing intellectual property law.

Past IP Section Events

Social Event at the Rockies Game

A fun time was had by all. Lots of great mingling, dinner, and drinks in the Platte River Picnic Area prior to the game, and a fun game to watch (even though we didn’t win).

USPTO Fall Roadshow

On Sept. 17, the U.S. Patent and Trademark Office (USPTO) presented its Fall Roadshow on the America Invents Act in Denver at the Denver Public Library. Senator Michael Bennett kicked the morning off welcoming the USPTO to Denver and talking about the effects that the Denver Satellite Patent Office will have on innovation and the Colorado community. Following Senator Bennett’s remarks, officials from the USPTO outlined the new rules regarding: inventor oaths; supplemental examination; preissuance submission; and citation of patent wwner claim ccope ctatement. The Roadshow had a short lunch break and the afternoon session covered the rules for post grant review, inter partes review, and the transitional program for covered business methods. Fees were the next topic of conversation, and the Roadshow ended with a discussion of first inventor to file guidelines. As always, hearing about the new rules from the USPTO was very enlightening and useful.

If you missed the Roadshow, the slides can be found here.

The Roadshow was followed by a reception at the University of Colorado, Denver Campus in the Terrace Room—it was well attended and every one had a good time.

Other News

Exciting Developments with Denver’s USPTO Satellite Office

A couple months ago, the USPTO announced plans to open a regional satellite office in Denver to function as a hub of innovation and creativity. In addition to raising the profile of the Colorado IP bar, the Denver patent office is expected to bring hundreds of jobs, hundreds of millions of dollars in revenue, and other exciting benefits to the state.

Since the announcement, plans for the Denver patent office continue to move full steam ahead with the announcement of several job postings and the site selection. The new office plans to occupy around 25,000 sq. ft. of the newly renovated Byron G. Rogers Federal Building in downtown Denver. The site will be designed as a place for small businesses and entrepreneurs to learn how to navigate the patent process, meet with examiners, and access USPTO’s comprehensive search databases. The regional office will bring hundreds of jobs, including a regional director, more than ten patent appeals judges for the new Patent Trial and Appeals Board, more than 100 examiners, plus support staff.

Many of these jobs are already being posted. Watch your emails for updates.

IP Section Website

Don’t forget to check out the CBA IP Section website. Please refer to it often for updates on news and events.
The CBA has posted online member directories for each practice section. Click here to see our directory.
Our contact at the CBA is Melissa Nicoletti, Director of Sections and Committees. She can be reached at 303-824-5321, or melissan@cobar.org.

IP Section Blog

The IP Section blog is at ipsectioncolorado.org. You can find news from and links to other Colorado and national IP resources, connect with other IP Section members, provide input to Section Officers, and get up-to-date information about IP Section activities. Be sure to register to get the full benefit of the blog.

If you would like to write a blog posting or have anything you would like posted to the blog, please e-mail Danny Sherwinter at dsherwinter@mfblaw.com

Classified Advertising

Experienced Chemical/Mechanical Patent Attorney

Available for contract/overflow work in patent/trademark prosecution, litigation support and opinion work. Please contact James K. Poole, 970-472-5061, jkpoole@aol.com.

Patent Searches by Noted Expert

Recommended by Jim Poole (CBA member) and other patent attorneys at InvestigatePatents.com. Please contact Stan Schwartz at Schwartz@InvestigatePatents.com or 301-806-0600 about your search needs and/or for an estimate.

Furniture Row Legal Position

Privately held, financially strong Denver-based group of companies with diverse interests including retail, manufacturing, real estate, and transportation, seeks an organized, personable lawyer with exceptional communication, writing, and legal skills for a new Associate General Counsel position in a nine person fast-paced legal department. The successful applicant will have ten to twenty years of experience in patent and trademark prosecution, copyrights, and licensing, and a willingness to assist in other legal areas as needed. Salary commensurate with experience. Resumes may be sent by email only to the attention of General Counsel, Furniture Row Legal Department at janine.wood@furniturerow.com.

Subject to editorial review, classified advertisements are printed by the IP Section free of charge and will run for three months, unless we receive a request to drop or continue running the ad. Submit or resubmit your ad by e-mailing the proposed text to Danny Sherwinter at dsherwinter@mfblaw.com.

Call for Suggestions, Ideas, and Articles

Luncheon Program Topics and Speakers

The IP Section Officers are also soliciting your suggestions and ideas for topics and speakers for our Luncheon programs for 2013. Please forward any comments you may have to Danny Sherwinter or our Programs Committee Chairperson, John Kennedy.

Articles for The Colorado Lawyer

The IP Section is in the process of compiling and evaluating articles to publish in The Colorado Lawyer this coming year. If you have an interest in submitting an IP-related article for TCL, please contact Danny Sherwinter. We encourage individuals who may be on their own but nonetheless would like to team up with a senior or junior practitioner to contact us so we can help facilitate that relationship.

IP Section Newsletter

Subject to editorial discretion and review, the IP Section Newsletter is open to the submission of short articles and columns on IP topics of interest. If you are interested in contributing, please contact Danny Sherwinter.

Recently Filed U.S.D.C. Colorado Cases

Filed 8/25/12–9/24/12

Caption Type Date Filed Case Number Judge Filing Attorneys
Third Degree Films, Inc. v. John Does 1–47 Copyright 9/9/12 1:2012-cv-02391 Judge Martinez, referred to Magistrate Judge Hegarty Jason Aaron Kotzker Kotzker Law Group
Malibu Media, LLC v. John Does 1–22 Copyright 9/9/12 1:2012-cv-02392 Judge Blackburn, referred to Magistrate Judge Hegarty Jason Aaron Kotzker Kotzker Law Group
Malibu Media, LLC v. John Does 1–16 Copyright 9/9/12 1:2012-cv-02393 Judge Krieger Jason Aaron Kotzker Kotzker Law Group
XPAYS, Inc. v. Does 1–17 Copyright 9/9/12 1:2012-cv-02418 Judge Brimmer, referred to Magistrate Judge Tafoya Sanjin Mutic Mile High Law Office, LLC
Combat Zone Corp. v. Does 1–6 Copyright 9/13/12 1:2012-cv-02439 Judge Blackburn, referred to Magistrate Judge Watanabe Thomas Gerald Jacks Chalker Flores, LLP
Broadnet Teleservices, LLC v. Tele-Town Hall, LLC Patent 9/11/12 1:2012-cv-02409 Judge Jackson Timothy Paul Getzoff Holland & Hart, LLP
Dines v. Toys “R” Us, Inc. Trademark 8/27/12 1:2012-cv-02279 Judge Brimmer, referred to Magistrate Judge Tafoya Jared Barrett Briant Faegre Baker Daniels LLP
Chipotle Mexican Grill, Inc. v. Jack in the Box Inc. Trademark 9/21/12 1:2012-cv-02511 Judge Arguello Donald A. Degnan Holland & Hart, LLP

Please email Danny Sherwinter at dsherwinter@mfblaw.com with any interesting Colorado District Court IP decisions or IP news involving Colorado Companies.

IP Law Developments from BNA

Patents/Burden of Proof

Licensee in Declaratory Judgment Suit Bears

Noninfringement Burden Post-MedImmune

Medtronic Inc. v. Boston Scientific Corp., Fed. Cir., No. 2011-1313, 9/18/12

Licensors of patents on implantable cardioverter defibrillators (ICDs) will have another attempt to prevent Medtronic Inc. from terminating its license, after a Sept. 18 ruling by the U.S. Court of Appeals for the Federal Circuit (Medtronic Inc. v. Boston Scientific Corp., Fed. Cir., No. 2011-1313, 9/18/12).

The court overturned a district court ruling of noninfringement after it had placed the burden on the patent owners to show otherwise. The appellate court held that, “in the post-MedImmune world,” the licensee seeking a declaratory judgment bears the burden of persuasion.

The court was referring to the U.S. Supreme Court's decision in MedImmune Inc. v. Genentech Inc., 549 U.S. 118, 81 USPQ2d 1225 (2007) (73 PTCJ 242, 1/12/07), that allows a declaratory judgment action to proceed even when the plaintiff licensee continues to make royalty payments to the licensor.

Licensee Files Declaratory Judgment Action

Morton Mower and Mieczyslaw Mirowski developed the first ICDs during the period between 1969 and 1980. Two reissue patents (RE38,119 and RE39,897) are assigned to Mirowski Family Ventures LLC (MFV), which in turn exclusively licensed the patents to Guidant Corp., which is owned by Boston Scientific Corp. The patents—the ‘897 patent is a continuation of the ‘119 patent—cover what has become known as a cardiac resynchronization therapy (CRT) device.

Medtronic is a sublicensee of the ‘119 patent. In 2003, it began paying royalties into an escrow account and initiated a validity challenge against the patent. The license called for MFV to identify infringing Medtronic products and then for Medtronic to file a declaratory judgment action, which it did in 2007 in the U.S. District Court for the District of Delaware. And because Medtronic was a licensee authorized to use the patented technology, MFV was prohibited from counterclaiming for infringement.

Judge Sue L. Robinson ruled that the burden always falls on the patentee to show infringement nevertheless. She found MFV’s testimony inadequate and ruled in favor of Medtronic.

MFV appealed. Medtronic cross-appealed a claim construction ruling.

Post-MedImmune World Necessitates Change

Judge Richard Linn identified the limited question at issue in the case as follows:

MedImmune provided licensees with a shield from the economic consequences of challenging their licensors’ patents while enabling those licensees to file declaratory judgment suits to clarify the rights and obligations of the parties under their license agreements. This case requires us to determine the proper allocation of the burden of persuasion in the post-MedImmune world, under circumstances in which a declaratory judgment plaintiff licensee seeks a judicial decree absolving it of its responsibilities under its license while at the same time the declaratory judgment defendant is foreclosed from counterclaiming for infringement by the continued existence of that license.

The court ultimately rejected arguments based on pre-MedImmune cases as inapt. For example, in contrast to a typical declaratory judgment action in a patent case, the license precluded the counterclaim here, which was not a concern in the case on which Medtronic relied, Vivid Technologies Inc. v. American Science & Engineering Inc., 200 F.3d 795, 53 USPQ2d 1289 (Fed. Cir. 1999) (59 PTCJ 431, 1/7/00).

The court concluded that the burden of persuasion must fall on the party seeking relief. In this case, that party was clearly Medtronic, “asking the court to disturb the status quo ante and to relieve it from a royalty obligation it believes it does not bear,” the court said. “A contrary result would allow licensees to use MedImmune’s shield as a sword—haling licensors into court and forcing them to assert and prove what had already been resolved by license.”

“Therefore, this court holds that in the limited circumstance when an infringement counterclaim by a patentee is foreclosed by the continued existence of a license, a licensee seeking a declaratory judgment of noninfringement and of no consequent liability under the license bears the burden of persuasion.”

The lower court’s burden shifting was clearly erroneous, the court said. It reversed and remanded accordingly.

Claim Construction Will Hurt MFV

The claim construction challenge related to whether claims of the ‘119 patent required using the devices to treat a specific medical condition, congestive heart failure. By so limiting the claim, MFV was more likely to survive a validity challenge based on the prior art.

The court ruled that the lower court had improperly imported the limitation. “On remand, Medtronic may press its invalidity contention based upon the correct claim construction,” the court said in conclusion.

Judges Alan D. Lourie and Sharon Prost joined the opinion.

Martin R. Lueck of Robins, Kaplan, Miller & Ciresi, Minneapolis, represented Medtronic. Arthur I. Neustadt of Oblon, Spivak, McClelland, Maier & Neustadt, LLP, of Alexandria, Va., represented MFV.

 

Copyrights/Infringement

Raging Bull Copyright Infringement Claim
Barred by Laches, Ninth Circuit Rules

BNA Snapshot
Petrella v. Metro-Goldwyn-Mayer Inc., 9th Cir., No. 10-55834, 8/29/12

A copyright infringement claim by a screenwriter’s daughter against the producers and distributors of the 1980 movie Raging Bull was held to be barred by the equitable defense of laches by the U.S. Court of Appeals for the Ninth Circuit on Aug. 29 (Petrella v. Metro-Goldwyn-Mayer Inc., 9th Cir., No. 10-55834, 8/29/12).

In a decision affirming all of the lower court’s rulings, the court also held that the plaintiff’s additional claims of unjust enrichment and for an accounting were likewise barred by laches, but it denied the defendant’s motions for sanctions and attorneys’ fees.

Screenwriter’s Daughter’s Claims Fail Below

Paula Petrella is the daughter of Frank Peter Petrella, who, in collaboration with his long-time friend Jake LaMotta, wrote the book and screenplays that were eventually used as the basis for the movie Raging Bull. These works were separately registered with the Copyright Office in 1963, 1970, and 1973.

In 1976, Frank Petrella and LaMotta assigned to Chartoff-Winkler Productions Inc., “exclusively and forever, including all periods of copyright and renewals and extensions thereof,” all of their respective copyright rights in the book and “in and to those certain screenplays based on [the book] which were written in 1963 and 1973,” except for certain rights reserved to the authors of the book.

In 1978, United Artists Corp., a wholly-owned subsidiary of Metro-Goldwyn-Mayer Studios Inc., acquired the motion picture rights to Raging Bull from Chartoff-Winkler Productions Inc.

In 1980, United Artists registered a copyright interest in the film. In 1981, Frank Petrella died, leaving his renewal rights to his heirs.

Paula Petrella, who claims to be the sole owner of the renewal rights, hired an attorney in 1990, who filed a renewal application for the 1963 screenplay on her behalf in 1991.

In 1998, Petrella’s attorney contacted MGM, asserting that Petrella had obtained the rights to the 1963 screenplay and that the exploitation of any derivative work was infringement.

MGM claimed that there was no infringement because the 1963 screenplay was a collaboration and MGM retained all necessary rights in the script under their agreement with LaMotta. MGM also denied that there was any substantial similarity of protectable elements between the 1963 screenplay and the film.

Several years later, in 2009, Petrella sued MGM and others for copyright infringement, unjust enrichment, and an accounting.

Judge George H. Wu of the U.S. District Court for the Central District of California granted MGM’s motions for summary judgment, holding that Petrella’s claims were barred by the equitable defense of laches. The court also denied MGM’s motion for sanctions and attorneys’ fees.

Petrella appealed.

Copyright Infringement Claim Barred by Laches

The Ninth Circuit court upheld the district court's grant of summary judgment in favor of MGM under the doctrine of laches.

“Laches is an equitable defense that prevents a plaintiff who, with full knowledge of the facts, acquiesces in a transaction and sleeps upon his rights,” Judge Raymond C. Fisher said, quoting Danjaq LLC v. Sony Corp., 263 F.3d 942, 59 USPQ2d 1880 (9th Cir. 2001) (62 PTCJ 435, 9/14/01). The statute of limitations for copyright claims in civil cases is three years. 17 U.S.C. §§507(b).

To prevail on a defense of laches, a defendant must prove three factual elements: (1) the plaintiff delayed in initiating the lawsuit; (2) the delay was unreasonable; and (3) the delay resulted in prejudice. The court concluded that MGM had proved satisfactorily: (1) that Petrella waited 18 years to file her lawsuit; (2) that the purpose of Petrella’s delay was to (unreasonably) seek to capitalize on the value of MGM’s labor; and (3) that the MGM took actions and risked consequences (prejudice) that it would not have risked had Petrella brought her suit promptly. Thus, according to the court, MGM established that there was no genuine issue of material fact as to these three elements and, therefore, summary judgment was appropriate.

As the Ninth Circuit held that Petrella's copyright infringement claim was barred by laches, it did not reach the merits of the claim.

Additional Claims Also Barred

Petrella also made claims for unjust enrichment and accounting, on the grounds that if MGM was a co-owner (not an infringer) of the copyright, it would have a duty to include Petrella in any profits derived through exploitation of the book and its derivatives. The Ninth Circuit upheld the district court’s ruling that these claims, which are equitable remedies, were also barred by the equitable defense of laches.

Sanctions and Attorneys’ Fees Denied

The Ninth Circuit court also upheld the district court’s denial of MGM’s requests for sanctions under Fed. R. Civ. P. 11 and for attorneys’ fees.

Rule 11 sanctions can be granted when a filing is frivolous, legally unreasonable, without factual foundation, or brought for an improper purpose. The district court found that Petrella had a reasonable belief that she could overcome the laches defense and therefore sanctions were not appropriate.

The Copyright Act allows the district court to award attorneys’ fees to the prevailing party unless such an award is “based on an inaccurate view of the law or a clearly erroneous finding of fact,” the court noted, quoting Fantasy Inc. v. Fogerty, 94 F. 3d 553, 556, 39 USPQ2d 1933 (9th Cir. 1996). The appellate court agreed with the district court’s reasoning that MGM was not attorneys’ fees because the lower court had “not grant[ed] summary judgment based on a lack of evidence of infringement, but solely on the ground that Plaintiff’s claims were barred by laches.”

The ‘Hostile’ Ninth Circuit

Judge Jack Zouhary of the U.S. District Court for the Northern District of Ohio, sitting by designation, joined the opinion. Judge William A. Fletcher concurred, but “only because we are compelled to follow our opinion in Danjaq LLC v. Sony Corp.”

Fletcher noted that there is significant disagreement from circuit to circuit on the availability of a laches defense in copyright cases. The Ninth Circuit “is the most hostile to copyright owners of all of the circuits,” he said.

The Ninth Circuit “has taken the wrong turn,” in Fletcher’s view. “We should revisit our case law to provide to innocent copyright owners who have brought infringement suits within the statute of limitations,” he said.

Glen Land Kulik of Kulik, Gottesman, Mouton & Siegel, Sherman Oaks, Calif., represented Petrella. Robert J. Catalano of Loeb & Loeb, Los Angeles, represented MGM.

Trademarks/Likelihood of Confusion

No Infringement Liability for Contractor That Used One Product in Bid, Another in Project

Suntree Technologies Inc. v. Ecosense International Inc., 11th Cir., No. 11-13916, 9/5/12

A general contractor that complied with a municipality’s requirement that all bids for a service “meet or exceed” the standards of a proprietary product did not infringe that product’s trademark when it used a competitor’s product after saying in its bid that it would use that proprietary product, the U.S. Court of Appeals for the Eleventh Circuit held Sept. 5 (Suntree Technologies Inc. v. Ecosense International Inc., 11th Cir., No. 11-13916, 9/5/12).

There was no evidence that a “bait and switch” took place, the court said, noting that the contractor’s bid complied with instructions set by the municipality. Moreover, the contractor’s decision to use another product came only after it won the bid, and then only after the city determined that the replacement product met the specification requirements of the contract. Thus, there was no likelihood of confusion, the court said, affirming a dismissal of all claims.

City Seeks Installation of Baffle Boxes

A baffle box is a structure, generally made of concrete or fiberglass, that is used in stormwater drainage systems. The box acts as a filter to prevent organic materials and other pollutants from reaching freshwater systems.

In 2008, the City of West Melbourne, Fla., began selecting bids for a stormwater drainage project. The bid contained detailed instructions advising bidding parties of the specification requirements for each component of the project. The specifications for baffle boxes instructed bidding parties that the boxes were “to be provided by Suntree Technologies, Inc. or approved equal.”

Another instruction stated that when a bidder desired to substitute a stated product with one of equal specifications, the city would not decide until after the contract was awarded whether the proposed alternative was acceptable. Thus, rather than pre-approving alternate products that contractors could include in their bids, the city required that the bids include the preapproved product. If the contractor that won the bid later found a less expensive baffle box that the city approved, then the contractor would benefit from the reduction in cost.

Suntree Technologies Inc. is a Florida-based manufacturer whose baffle boxes have been certified by New Jersey’s Corporation for Advanced Technologies. Florida recognizes New Jersey’s pre-approval of products, and thus Melbourne decided to require that all bidders incorporate either Suntree baffle boxes or an “approved equal” in their proposals.

Derrico Construction Corp. ultimately won the city’s contract, its bid being significantly lower than all other bids. Though Derrico said in its proposal it would use Suntree baffle boxes, after being awarded the contract it requested approval to instead use boxes created by Ecosense International Inc. The city granted approval.

After the project was complete, the city asked Ecosense to demonstrate how to clean the baffle boxes. Ecosense provided a power point presentation showing baffle boxes being cleaned by municipal workers in the City of Rockledge, Fla. Rockledge has baffle boxes manufactured by both Ecosense and Suntree, and thus the presentation included photographs of both types of boxes. However, Suntree's name never appeared in the presentation.

Suntree filed suit in the U.S. District Court for Middle District of Florida against Derrico and Ecosense, arguing that the former’s use of Suntree’s trademark in its bid constituted infringement. Ecosense and Ecosense’s president, George Dussich, were contributorily liable for this infringement, Suntree argued. The complaint also alleged that the power point presentation constituted infringement, and that Derrico and Ecosense engaged in unfair competition and deceptive trade practices by obtaining the contract under the pretense that Suntree products would be used, and then instead using Ecosense’s designs.

Derrico and Suntree settled, and pursuant to their agreement Derrico agreed to help Suntree in the instant case. Pursuant to that agreement, Derrico’s president stated that it never intended to use Suntree boxes and based its bid on Ecosense’s products. However, it still listed Suntree because it thought that gave it the best chance of winning the contract.

The district court granted Ecosense summary judgment after it determined that Ecosense took no part in the drafting of Derrico’s bid, and that the bid itself complied with municipality specifications.

Suntree appealed.

No Likelihood of Confusion From Bid

In order to prove that Ecosense was contributorily liable for trademark infringement, Suntree first had to show that Derrico directly infringed its mark when it submitted its bid. The court thus applied the likelihood of confusion test set forth in AmBrit Inc. v. Kraft Inc., 812 F.2d 1531, 1 USPQ2d 1161 (11th Cir. 1987) (33 PTCJ 179, 1/8/87), to determine if Derrico’s use of the Suntree mark in its bid constituted infringement.

The first five factors of the test are irrelevant, said Judge Arthur L. Alarcón of the U.S. Court of Appeals for the Ninth Circuit, sitting by designation.

“Derrico did not use Suntree’s mark to identify Ecosense’s product, nor is there any question that the companies have similar names or mark,” the court said. It added, “The dispositive issue in this case is whether Suntree presented evidence that demonstrates that there is a genuine issue of material fact in dispute regarding whether Derrico used Suntree’s reputation to win a bid and then used a ‘bait-and-switch’ tactic to substitute Ecosense’s baffle boxes for those of Suntree.”

On this issue, however, it was clear that Derrico never intended to confuse the city. “It is undisputed that, in listing Suntree in its bid, Derrico did what was required by the Instructions to Bidders, which provided that the contract would be awarded ‘without consideration of possible substitute’ or ‘or equal’ items and that ‘application for such acceptance [would] not be considered by the Engineer until after the Effective Date of the Agreement,’” the court said.

Moreover, Derrico never misled the city about its intention to see if it could find a replacement for the Sunrise baffle boxes after securing the bid. Thus, there was no evidence whatsoever that Derrico misled the city, the court said.

“The district court correctly concluded that Suntree failed to demonstrate that Derrico had infringed on its trademark when it listed Suntree as the supplier of baffle boxes in its bid and requested an ‘or equal’ substitution of Ecosense after being awarded the contract,” the court said. “It follows that because there was no evidence of infringement, Suntree’s claim that Ecosense and Dussich contributed to the infringement necessarily fails.”

Presentation Not Infringing

The court next turned to Suntree’s argument that Derrico infringed its mark when it showed Suntree baffle boxes in its power point presentation.

Suntree claimed Derrico engaged in reverse passing off by displaying Suntree boxes in Derrico’s materials. Rather than applying the entire likelihood of confusion test, the court instead said, “We agree with the Sixth Circuit’s opinion in Johnson v. Jones, 149 F.3d 494[, 47 USPQ2d 1481] (6th Cir. 1998), that where ‘defendant has taken the plaintiff’s product and has represented it to be his own work[,]’ the first five factors of the likelihood of confusion test are irrelevant,” the court said.

The only relevant factor then was whether Derrico intended to mislead consumers into believing that Suntree’s products were its own. The court determined that it did not. “Suntree failed to present evidence that Ecosense had any intention to portray Suntree’s product as its own,” the court said. There was also no evidence of confusion, and thus this claim too was correctly dismissed by the district court, the appeals court said.

Moreover, because the presentation was made at the request of a consumer, and then only after the product had been sold and installed, it did not constitute false advertising, the court said. It therefore affirmed the district court’s grant of summary judgment in favor of the defendants. Chief Judge Joel F. Dubina and Judge Adalberto Jordan joined the opinion.

Suntree was represented by Stephen H. Luther of Allen Dyer Doppelt Milbrath & Gilchrist, Orlando, Fla. Ecosense was represented by Douglas B. Brown of Rumberger Kirk & Caldwell, Orlando, Fla.

A special thanks goes to BNA for allowing the IP Section to print its stories. If you are interested in receiving a free 15 day trial from BNA, please contact George Tanguay at 1-800-542-1113 or at gtanguay@bna.com.

IP Section Officer Contact Information

Chair

Michael P. Dulin
Polsinelli Shugart, P.C.
1515 Wynkoop Street #600
Denver, CO 80202
303-572-9300
mdulin@polsinelli.com

Vice Chair

Mollybeth (Molly) Kocialski
Oracle America, Inc.
500 Eldorado Blvd., M/S UBRM 01-200
Broomfield, CO 80021
303-272-9945
Mollybeth.kocialski@oracle.com

Secretary/Treasurer

Danny Sherwinter
Marsh Fischmann & Breyfogle LLP
1881 9th Street, Suite 335
Boulder, CO 80301
720-562-5500
dsherwinter@mfblaw.com

 

All correspondence, phone calls, facsimiles, and emails concerning this newsletter, as well as advertising submissions should be directed to Danny Sherwinter at dsherwinter@mfblaw.com.

This newsletter is for information only and does not provide legal advice.

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